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Lawyer Truman Eldridge still sounds incredulous that 3M Co. sued Barton Nelson Inc. because of suspicions the Kansas City company might be violating the Post-it Note patent by wrongly applying adhesive to semi-sticky plastic tabs.

"Somebody at 3M got their shorts twisted and looked at these things and said, 'These don't look like the adhesive is applied in little islands,'" said Eldridge of Schlee Huber McMullen & Krause PC.

On Feb. 4, the jury in U.S. District Court in Minnesota required 40 minutes to reach its verdict:

Barton Nelson wasn't wrongly applying its adhesive to Tac Tabs.

3M had violated an 18-year-old promise not to sue.

3M owed Barton Nelson $980,000 in court costs.

The victory came against tough odds as two 20-lawyer Kansas City firms squared off with the 800-lawyer Kirkland & Ellis of Chicago and 3M, a $20 billion behemoth.

"We took care of them in their home court," said Tracey Truitt, a patent lawyer with Hovey Williams LLP whom Eldridge called to help stanch the stream of patent arguments flowing from 3M lawyers. "They are a huge company compared with Barton Nelson. They had almost unlimited resources."

3M spokeswoman Jacqueline Berry said the company wouldn't discuss the case.

"We respect the jury's verdict, but of course we're disappointed," she said. "We're planning to appeal."

3M had promised not to sue Barton Nelson back in 1987. As long as Barton Nelson didn't change the way it put adhesive on custom-printed, semi-sticky promotional products, 3M wouldn't ask a court to decide whether Barton Nelson's products violated 3M's Post-it Note patent.

Both companies' notes can be easily unstuck from an adding machine or typewriter and restuck to a file folder, but each creates the "repositional" effect by a different method.

3M's adhesive contains microspheres that prevent Post-it Notes from sticking too firmly to a surface. Barton Nelson created its adhesive, CFO Bart Nelson said, and applies it in small globs with a textured roller.

"It was an aggressive adhesive, but the small-spaced dots and islands made it repositional," Nelson said.

The promise not to sue secured Barton Nelson's help in 3M's battle against a U.S. patent application by a German manufacturer, which could have allowed the foreign company to introduce a product in this country that would compete with Post-it Notes. The Germans lost.

And 3M had no worry that Barton Nelson would take its market share, Eldridge said.

"Barton Nelson didn't bother them one iota because we weren't in the same market," Eldridge said. "Everything we make is specially printed for an advertising customer."

With $40 million in yearly sales, 250 employees in south Kansas City and 300 more in Nogales, Mexico, Barton Nelson makes nonsensical the modern wisdom that a family-owned company can't long endure.

Formed as an advertising firm in 1961 by Barton Nelson Jr. -- whose bank clients embraced his idea of hiring celebrity spokesmen such as Jack Benny and offering deposit incentives such as toasters -- the company still is run by nine family members who have focused it on manufacturing custom promotional products.

What led 3M to sic its lawyers on Barton Nelson in 2002 was a relatively new product: sticky plastic tabs that Barton Nelson created when the company learned customers were tearing sticky notes in half to create bookmarks and file markers.

"At that time, we told them, 'Hey, you've got an agreement with us; you can't sue us,'" Nelson said. "And they basically decided to take it to court and see how good the agreement was."

3M knows patent law, having received roughly one new patent a day for the past decade, Truitt said.

"They have all the tools in place and in motion at all times," Truitt said. "We were there, really, to alleviate the burden on (Eldridge) from dealing with all of these motions that really had more to do with the patents."

As recently as Feb. 24, after the jury decided the case, 3M lawyers filed yet another motion, arguing the no-suit promise applied only to paper notepads, and in January, 3M sued Barton Nelson over another patent.

"That was, again, just to occupy more of our time as we were leading up to trial," Truitt said.

But Eldridge and Barton Nelson had an unseen advantage, Truitt said: Eldridge and executives of the family-owned company had worked together for decades, giving Eldridge and his witnesses firsthand knowledge of the covenant between Barton Nelson and 3M.

"Having Truman there and having the principals at Barton Nelson, when it came right down to it, that's what carried the day," Truitt said.

Now, Hovey Williams and Barton Nelson are researching whether the company, in fact, beat 3M to market with its semi-sticky tabs.

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